TED M. SICHELMAN Professor of Law

University of San Diego School of Law

5998 Alcala Park

San Diego, CA 92110-2492 (619) 260-7512 (phone)

(619) 260-2748 (fax)

tsichelman@sandiego.edu (email)

http://www.sandiego.edu/law/faculty/profiles/bio.php?ID=795 (web bio)

http://papers.ssrn.com/sol3/cf_dev/AbsByAuth.cfm?per_id=450090 (SSRN)

EDUCATION

Harvard Law School Cambridge, MA

J.D., magna cum laude (1999)

Harvard Journal of Law & Technology; Harvard Environmental Law Review

Research Assistant

o Prof. David Rosenberg; Prof. Laurence Tribe; Berkman Center for Internet & Society

Florida State University Tallahassee, FL

M.S., Physics (1996)

Course work in mechanics, electricity & magnetism, quantum mechanics & field theory, and

statistical mechanics & thermodynamics.

Specialized study in superstring theory and particle physics.

Stanford University Stanford, CA

A.B., with distinction, Philosophy (1992); Phi Beta Kappa

Program in History & Philosophy of Science

Research Assistant, Gravity Probe B Project. Assisted with experimental test of general relativity.

Research Assistant, Stanford Sleep Disorders Clinic.

RESEARCH INTERESTS

Patent law; intellectual property; law & artificial intelligence; law & logic; computational legal studies; law

& entrepreneurship; empirical legal studies; law & economics; legal theory.

TEACHING EXPERIENCE

University of San Diego School of Law

Professor (2012-), Assoc. (2011-12), Asst. (2009-11)

San Diego, CA

2009-present

Courses: Patent Law; Patent Law Theory; Patent Law Policy; IP Speaker Series; IP Theory; IP Seminar;

Patents & Innovation; IP & Business; IP/Corporate Technology Externships; Multistate Bar Exam Review.

Service: Founder & Executive Director, Center for Computation, Mathematics, and the Law (13-); Co-

Director, Center for IP Law & Markets (13-); Member, Rankings Committee (14-); Member, Faculty

Appointments Committee (11-); Member, Technology Committee (11-); Director, IP & Corporate

Technology Externship (10-); Advisor, Student IP Law Association (10-); Student Paper Supervisor (09-);

University Senate (09-11).

Primary organizer for six years of annual, on-campus patent law conference, featuring

Federal Circuit and local judges, prominent attorneys, and international and national patent

law scholars.

o Additionally, co-founded and periodically host the “The Patent Conference”

(PatCon), the largest annual patent law conference for academics.

Ted Sichelman – March 2018 Page 2 of 25

Founded and co-direct the IP & Corporate Technology Externship program, which pairs

students with supervising lawyers to provide pro bono corporate and IP counseling to local

technology startups, inventors, artists, and musicians.

Founded and direct the Center for Computation, Mathematics, and the Law (CCML).

o In 2015, served as the Conference Chair and hosted the largest conference on

artificial intelligence and law (ICAIL); organize and host other events.

Harvard Law School

Visiting Professor

Cambridge, MA 2016 (winter, fall)

Courses: Intellectual Property & Business; Patent Law; Intellectual Property Theory

University of California, Berkeley, School of Law

Ewing Marion Kauffman Research Fellow

Berkeley, CA

2008-2009

Course: Patent Litigation.

University of California, Los Angeles

Instructor, Extension Program

Los Angeles, CA

2006

Course: Legal Software.

Florida State University

Instructor, Physics Department

Tallahassee, FL

1995-1996

Courses: Introductory Physics Laboratory A & B.

FELLOWSHIP & CLERKSHIP

Center for the Protection of Intellectual Property,

Antonin Scalia Law School, George Mason

University

Senior Scholar

Arlington, VA 2017-present

University of California, Berkeley, School of Law

Ewing Marion Kauffman Research Fellow

Berkeley, CA

2008-2009

U.S. Court of Appeals for the Ninth Circuit Pasadena, CA 1999-2000

Law Clerk to the Honorable A. Wallace Tashima

CITATION METRICS

Google Scholar citations: 1504 (all); 989 (since 2013) (as of January 2018)

SSRN: 16,443 total downloads; download rank (by total downloads): #381 (law authors); #1613 (all

authors) (as of January 2018)

The 1st (Commercializing Patents) and 2nd most-cited (Life After Bilski) (published since 2010) and

25th most-cited (High Technology Entrepreneurs and the Patent System) (published in 2005-2009) of all

intellectual property law articles published in U.S. law journals (see here)

The 1st (Commercializing Patents) and 2nd most-cited (Life After Bilski) (published since 2010) and

12th most-cited (High Technology Entrepreneurs and the Patent System) (published in 2005-2009) of all

patent law articles published in U.S. law journals (see here)

The most-cited law review article published in the Stanford Law Review since 2010 (as of May 2016)

(according to Google Scholar) (Commercializing Patents)

Of all law journal articles available on HeinOnline (as of January 2018):

o 47th most-cited article published in 2014 (Purging Patent Law of Private Law Remedies)

o 6th most-cited article published in 2011 (Life After Bilski)

o 8th most-cited article published in 2010 (Commercializing Patents)

Ted Sichelman – March 2018 Page 3 of 25

o 19th most-cited article published in 2009 (High Technology Entrepreneurs and the Patent

System)

Cited by the U.S. Supreme Court in Mayo v. Prometheus (2012) (Breyer, J., unanimous opinion) and

over 30 other judicial opinions (Life After Bilski)

JOURNAL PUBLICATIONS

Why Do Startups Use Trade Secrets?, 94 NOTRE DAME LAW REVIEW (forthcoming 2018).

Innovation Factors for Reasonable Royalties, 24 TEXAS INTELLECTUAL PROPERTY LAW JOURNAL

(forthcoming 2018) (symposium volume), available at https://ssrn.com/abstract=2865022.

Data-Generating Patents (with Brenda M. Simon), 111 NORTHWESTERN UNIVERSITY LAW REVIEW 377

(2017), available at http://ssrn.com/abstract=2753547.

Patents, Prizes, and Property, 30 HARVARD JOURNAL OF LAW & TECHNOLOGY 279 (2017) (symposium

volume), available at http://ssrn.com/abstract=2930140.

Focus on Economically Important Patent Applications to Enhance Patent Quality, 2 BERKELEY

TECHNOLOGY LAW JOURNAL COMMENTARIES (2016), available at http://btlj.org/2016/03/focus-

economically-important-patent-applications-enhance-patent-quality/.

Do Economic Downturns Dampen Patent Litigation? (with Alan Marco and Shawn Miller), 12 JOURNAL

OF EMPIRICAL LEGAL STUDIES 481 (2015), available at http://ssrn.com/abstract=1641425.

Meaning is in the Mind of the Reader: A Rejoinder to Burk, Cotter, and Lemley, 91 TEXAS LAW REVIEW

SEE ALSO 15 (2014), available at http://ssrn.com/abstract=2506740.

The Vonage Trilogy: A Case Study in “Patent Bullying,” 90 NOTRE DAME LAW REVIEW 543 (2014),

available at http://ssrn.com/abstract=1856703.

Reprinted in PERSPECTIVES ON PATENTABLE SUBJECT MATTER (Michael B. Abramowicz et al.,

eds., 2014)

Selected as a “Law Review” commentary in the annotated U.S. Code of Federal Regulations. 17

C.F.R. § 229.103 (“Legal Proceedings”).

Purging Patent Law of “Private Law” Remedies, 92 TEXAS LAW REVIEW 517 (2014), available at

http://papers.ssrn.com/abstract=1932834.

Stanford-Samsung Patent Law Remedies Paper Contest winner.

Invited responses: Dan L. Burk, Means and Meaning in Patent Remedies, 92 TEXAS L. REV. SEE

ALSO 13 (2014); Thomas F. Cotter, Make No Little Plans: Response to Ted Sichelman, Purging

Patent Law of “Private Law” Remedies, 92 TEXAS L. REV. SEE ALSO 25 (2014), Mark A.

Lemley, Taking the Regulatory Nature of IP Seriously, 92 TEXAS L. REV. SEE ALSO 107 (2014).

Commercializing Information with Intellectual Property, 91 TEXAS LAW REVIEW SEE ALSO 35 (2014) (by

invitation), available at http://ssrn.com/abstract=2341288.

Patent Law Revisionism at the Supreme Court?, 45 LOYOLA UNIVERSITY CHICAGO LAW JOURNAL 307

(2013) (symposium volume, by invitation), available at http://ssrn.com/abstract=2297725.

Selected as a “Law Review Commentary” in the annotated U.S. Code. 35 U.S.C.A. § 271

(“Infringement of a Patent”).

Enforcement as Substance in Tax Compliance, 70 WASHINGTON & LEE LAW REVIEW 1679 (2013) (with

Leandra Lederman), available at http://ssrn.com/abstract=2261507.

Selected as a “Law Review” commentary in the annotated U.S. Code of Federal Regulations, 17

C.F.R. § 240.10b–5 (“Employment of manipulative and deceptive devices”).

Paving the Path to Accurately Predicting Legal Outcomes: A Comment on Professor Chien’s Predicting

Patent Litigation, 90 TEXAS LAW REVIEW SEE ALSO 97 (2012) (with Jay P. Kesan and David L.

Schwartz) (by invitation), available at http://ssrn.com/abstract=1987258.

Ted Sichelman – March 2018 Page 4 of 25

Patents as Promoters of Competition: The Guild Origins of Patent Law in the Venetian Republic, 49 SAN

DIEGO LAW REVIEW 1267 (2012) (with Sean O’Connor) (symposium volume, by invitation), available

at http://ssrn.com/abstract=2126944.

Life After Bilski, 63 STANFORD LAW REVIEW 1315 (2011) (with Mark Lemley, Michael Risch, and Polk

Wagner) (symposium volume, by invitation), available at http://papers.ssrn.com/abstract=1725009.

Selected as a top patent law article in 2011 for publication in the Intellectual Property Law Review

by Thomson-Reuters/Westlaw.

Taking Commercialisation Seriously, 33 EUROPEAN INTELLECTUAL PROPERTY REVIEW 200 (2011) (by

invitation), available at http://papers.ssrn.com/abstract=1740614.

Markets for Patent Scope, 2 IP THEORY 42 (2011) (symposium volume), available at

http://papers.ssrn.com/abstract=1742454.

Commercializing Patents, 62 STANFORD LAW REVIEW 341(2010), available at

http://ssrn.com/abstract=1395558.

Selected as a “Law Review” commentary in the annotated U.S. Code of Federal Regulations, 37

C.F.R. § 1.78 (“Claiming benefit of earlier filing date and cross-references to other applications”).

Patenting by Entrepreneurs: An Empirical Study, 17 MICHIGAN TELECOMMUNICATIONS & TECHNOLOGY

LAW REVIEW 111 (2010) (with Stuart Graham), available at http://ssrn.com/abstract=1562678.

Selected as a top patent law article in 2010 for publication in the Patent Law Review by

Thomson-Reuters/Westlaw.

Selected as a “Law Review” commentary in the annotated U.S. Code of Federal Regulations. 37

C.F.R. § 1.27 (“Definition of small entities”).

Reprinted in part as Patenting by High Technology Entrepreneurs, in CREATIVITY, LAW, AND

ENTREPRENEURSHIP (Shubha Ghosh ed., 2011) (with Stuart Graham).

Myths of (Un)Certainty at the Federal Circuit, 43 LOYOLA OF LOS ANGELES LAW REVIEW 1161 (2010)

(symposium volume), available at http://ssrn.com/abstract=1547392.

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey, 24

BERKELEY TECHNOLOGY LAW JOURNAL 255 (2009) (with Stuart Graham, Robert Merges, and Pamela

Samuelson), available at http://ssrn.com/ abstract=1429049.

Reprinted in INTELLECTUAL PROPERTY AND DIGITAL CONTENT (Richard Gruner ed.) (2013).

Why Barring Settlement Bars Legitimate Suits: A Reply to Rosenberg and Shavell, 18 CORNELL JOURNAL

OF LAW & PUBLIC POLICY 57 (2008), available at http://ssrn.com/abstract=986234.

Why Do Start-Ups Patent?, 23 BERKELEY TECHNOLOGY LAW JOURNAL 1063 (2008) (with Stuart Graham)

(symposium volume, by invitation), available at http://ssrn.com/abstract=1121224.

Book Note, 10 HARVARD JOURNAL OF LAW & TECHNOLOGY 707 (1996) (reviewing MICHAEL REISS &

ROGER STRAUGHAN, IMPROVING NATURE?: THE SCIENCE AND ETHICS OF GENETIC ENGINEERING

(1996)), available at http://jolt.law.harvard.edu/articles/pdf/v10/10HarvJLTech707.pdf.

BOOKS & BOOK CHAPTERS

Very Tight ‘Bundles Of Sticks’: Hohfeld’s Complex Jural Relations, in THE LEGACY OF WESLEY HOHFELD:

EDITED MAJOR WORKS, SELECT PERSONAL PAPERS, AND ORIGINAL COMMENTARIES (Shyam

Balganesh, Ted Sichelman & Henry Smith eds., Cambridge University Press, forthcoming 2018),

available at https://ssrn.com/abstract=2947912.

The Pathologies of Data-Generating Patents, in BIG DATA, HEALTH LAW, AND BIOETHICS (I. Glenn Cohen

et al., eds. forthcoming 2017), available at https://ssrn.com/abstract=2882459.

Ted Sichelman – March 2018 Page 5 of 25

Data Sources on Patents, Copyrights, Trademarks, and Other Intellectual Property (with David L.

Schwartz), in 2 RESEARCH HANDBOOK ON THE LAW & ECONOMICS OF INTELLECTUAL PROPERTY

RIGHTS (ANALYTICAL METHODS) (Peter S. Menell & David L. Schwartz eds., forthcoming 2017),

available at http://ssrn.com/abstract=2646051.

Intellectual Property and Technology Startups: What Entrepreneurs Tell Us, in 27 ADVANCES IN THE

STUDY OF ENTREPRENEURSHIP, INNOVATION AND ECONOMIC GROWTH, TECHNOLOGICAL

INNOVATION: GENERATING ECONOMIC RESULTS (S. Hoskinson & M.C. Thursby eds., 2016).

Funk Forward, in INTELLECTUAL PROPERTY AT THE EDGE: THE CONTESTED CONTOURS OF IP (Rochelle

Dreyfuss, Jane Ginsburg & Carol Rose eds., 2014), available at http://ssrn.com/abstract=2035027.

Why do Entrepreneurs Patent? (with Stuart Graham), in HANDBOOK OF LAW, INNOVATION, AND GROWTH

212-44 (Robert Litan ed., 2011).

WORKS IN PROGRESS

An Economic Model of Patent Exhaustion (with Olena Ivus & Edwin Lai) (presented at 2016 Center for

Protection of Intellectual Property Edison Fellowship Meeting), available at

https://ssrn.com/abstract=2921443. In the U.S., the judge-made doctrine of “patent exhaustion” implies

that the authorized sale of patented goods “exhausts” the patent rights in the goods sold and precludes

additional royalty payments from downstream buyers. However, in some instances, patent owners

attempt to contractually restrict downstream buyers in order to preserve their right to collect such

payments. Whether and when such contractual restrictions can overcome the doctrine of patent

exhaustion has been the subject of many conflicting judicial decisions. This paper offers a formal

economic model of domestic patent exhaustion that explicitly incorporates transaction costs in licensing

to consumers, and examines how a shift in patent policy from absolute to opt-out patent exhaustion (in

which the patent owner can opt-out via contract) affects social welfare. The results show that when

transaction costs are low, the regime of opt-out patent exhaustion is socially optimal, because it allows

welfare-enhancing price discrimination via downstream licensing. Conversely, when transaction costs

are high, the regime of opt-out patent exhaustion leads to a greater loss of static efficiency, because the

benefits of price discrimination are offset by transaction cost frictions. However, even when transaction

costs are high, dynamic benefits in promoting ex ante investment in product quality may outweigh any

static inefficiencies.

Revisiting Labor Mobility in Innovation Markets (with Jonathan Barnett) (presented at 2018 AIPLA Trade

Secret Summit; 2016 American Law & Economics Conference; 2016 Workshops at Harvard, Loyola

(LA), University of Southern California, and University of San Diego; 2015 Works in Progress in IP

conference, 2015 USD Annual Patent Law Conference, 2014 University of Southern California School

of Law Faculty Workshop), available at http://ssrn.com/abstract=2758854. It is widely asserted that

laws that facilitate labor mobility among R&D personnel promote innovation. Two bodies of evidence

have been presented in support of this view. First, recent studies purport to show empirical

relationships between bans on enforcing noncompete agreements, increased employee movement, and

increased innovation. We find that these studies generally misconstrue legal differences across states

and otherwise are flawed, incomplete, or limited in applicability. Second, the scholarly literature has

adopted a now-standard argument that California’s policy against noncompetes has encouraged

innovation and promoted Silicon Valley’s prominence as the world’s leading technology center. We

show that this account overlooks multiple critical facts. Rather, fundamental technological and

economic factors more persuasively account for the rise of Silicon Valley. In view of these empirical

infirmities, there seems to be little compelling ground for the view that barring noncompetes and other

limitations on employee mobility promotes innovation.

Retracing the Origins of the Patent System (with Stefania Fusco and Toni Veneri) (presented at 2018

PatCon; 2016 IP Scholars Conference; 2014 PatCon, University of San Diego School of Law; 2014

Works in Progress in IP Conference, Santa Clara Law School). Scholars have widely and consistently

contended that the Venetian Patent Act of 1474 was a watershed in the history of patent law.

Ted Sichelman – March 2018 Page 6 of 25

Specifically, they have asserted that the 1474 Act erected an administrative-centered system of

statutorily cabined patent grants that replaced the previous system of legislative-centered ad hoc grants,

and served as a model for subsequent patent systems throughout the European continent. Based upon an

extensive examination of archival material from the State Archives of Venice, we show that this view is

largely incorrect—a finding that has profound implications for our understanding of the origins,

migration, and development of the patent system.

THE LEGACY OF WESLEY HOHFELD: EDITED MAJOR WORKS, SELECT PERSONAL PAPERS, AND ORIGINAL

COMMENTARIES (Shyam Balganesh, Ted Sichelman & Henry Smith eds., Cambridge University Press,

forthcoming 2018). This co-edited volume celebrating the 100-year anniversary of the untimely passing

of the landmark legal theorist Wesley Hohfeld will contain annotated versions of his major works,

previously unseen personal papers, and essays on his life and work by major national and international

scholars.

Modeling Legal Modularity (with Henry Smith) (presented at 2016 University of San Diego School of Law

Faculty Colloquium; 2014 Center for Computation, Mathematics, and the Law Workshop, University

of San Diego School of Law). Law employs modular structures to manage the complexity among legal

actors. Property, torts, contracts, intellectual property, and doctrines in other areas of the law reduce

information costs in similar ways by chopping up the world of interactions between parties into

manageable chunks—modules—that are semi-autonomous. Here, borrowing from numerical measures

of modularity in network theory, we offer the beginnings of a quantitative model of legal modularity.

Does Patent Litigation Diminish R & D? (with Shawn Miller) (presented at 2015 Works in Progress in IP

conference). The overall rate of U.S. patent litigation has been growing rapidly over the past twenty

years, and recent studies estimate that the economic impact of U.S. patent litigation may now be as

large as $80 billion per year. Because patent litigation is costly, one might expect that it would diminish

R & D expenditures, the very activity patents are designed to spur. Here, we supplement, extend, and

test recent firm-level studies by performing macroeconomic regressions on the U.S. economy as a

whole.

Patents as Hedges (presented at 2015 University of San Diego IP Speaker Series and Faculty Colloquium,

2015 George Mason Law School Center for Protection of Intellectual Property Law Workshop). The

overriding justification offered for patents has been to optimally induce innovative technological

activity by preventing free riding. Despite this free-riding premise, patent infringement has never

required copying. Here, I offer a novel incentive theory of patents to explain why patents should reach

wholly independent activity. Leveraging the work of Joseph Schumpeter, I argue that patents best

promote innovation when used as hedges to foreclose any form of potential competition. Relatedly, I

contend that the public goods explanation of patents is incomplete. Rather, innovators who are first to

the market can enjoy supernormal profits without patents or other IP rights. Patents reduce the risk of

competition—of which free-riding is merely one form—and, hence, the erosion of supernormal profits,

thereby increasing incentives to innovate. Nonetheless, overly suppressing competition may dampen

innovation. Thus, fine-tuning the nature and scope of patent rights requires a delicate balance between

these competing forces.

Predicting Obviousness (with Ryan Holte) (presented at 2018 PatCon; 2015 International Conference on AI

& Law Intellectual Property Workshop; 2015 Predicting Legal Outcomes Workshop, Stanford Law

School). No comprehensive empirical research has been conducted on patent law obviousness decisions

following the Supreme Court’s landmark decision in KSR v. Teleflex in 2007. In addition to analyzing

historical decisions regarding obviousness using standard regression techniques, this paper extends

previous AI machine learning methods to predict legal outcomes in appellate and trial courts.

Are Patent Trolls “Opportunistic”? (presented at 2015 PatCon, 2014 Conference on Empirical Legal

Studies), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2520125. A recent and

widely received study finds that non-practicing entities (NPEs)—pejoratively known as “patent

trolls”—behave opportunistically. This essay critiques this study in detail. It concludes that the authors’

Ted Sichelman – March 2018 Page 7 of 25

dataset is incomplete and unrepresentative, their theoretical model is flawed, and their empirical models

are unsound. As such, neither the study’s findings nor its policy prescriptions are justified.

Trademarks as Club Goods (with Abraham Bell) (presented at 2015 IP Scholars Conference; 2015 Works

in Progress in IP). We offer an alternative justification for trademarks, namely, that they enable

producers to create and police the boundaries of a “club,” the members of which are the individual

promoters and users of the mark owner’s products and services. Our conception of the club goods

function of trademark protection sweeps in several uses that were once thought exceptional (such as

so-called Veblen or “snob” goods) as well as more general theories of the expressive value

trademarks. Our theory offers a counterweight to a large body of scholarship that maintains that these

trademark doctrines are irredeemably overprotective and, thus, reduce overall economic welfare.

The Mathematical Structure of the Law (presented at 2014 Center for Computation, Mathematics, and the

Law Workshop, University of San Diego School of Law, 2013 Harvard Law School Private Law

Seminar, 2011 University of San Diego Faculty Colloquium, 2011 Society for Evolutionary Analysis in

Law Conference). Proposes a mathematical theory of rights and legal relations, relying on the

jurisprudential framework introduced by Wesley Hohfeld in the early 20th century. Offers a

probabilistic model of legal relations that provides insight into the philosophical nature of law and can

be applied to AI models of law to better model legal problems.

Quantum Game Theory and Coordination in Intellectual Property (presented at 2010 IP Scholars

conference, 2009 Annual Meeting of the American Law & Economics Association, 2009 Annual

Meeting of the Midwestern Law & Economics Association, and 2008 Works-in-Progress IP

Conference), available at http://ssrn.com/abstract=1656625. Applies the new field of quantum game

theory to uncertainty in intellectual property law, modifying current classical models of patent racing.

Based on this model, suggests the use of probabilistic, imperfect rights for solving coordination

problems in intellectual property law.

PATENT LAW: CASES AND PRINCIPLES. Executive editor and co-author of a patent law casebook that will be

available in electronic and print formats on a novel distribution platform that supports full casebook

customization by adopting professors.

OTHER INTELLECTUAL PROPERTY LAW PUBLICATIONS

Does the Supreme Court Understand the Innovation Economy, FORBES, July 12, 2017,

https://www.forbes.com/sites/realspin/2017/07/12/does-the-supreme-court-understand-the-innovation-

economy/2/#745e4e7c45d6

Sometimes, Information Wants to be Expensive, JOTWELL, June 26, 2017,

http://ip.jotwell.com/sometimes-information-wants-to-be-expensive/

An Economic Argument Against Mandatory Patent Exhaustion, PATENTLY-O, Mar. 19, 2017,

https://patentlyo.com/patent/2017/03/economic-mandatory-exhaustion.html

Patent Law’s Gordian Knot, JOTWELL, July 7, 2016, http://ip.jotwell.com/patent-laws-gordian-knot/

Why the (Previously) Improving Economy Likely (Also) Reduced Patent Litigation Rates, PATENTLY-O,

Sept. 13, 2015, http://patentlyo.com/patent/2015/09/previously-improving-litigation.html

A Pluralistic Vision of Incentivizing Innovation, JOTWELL, July 20, 2015, http://ip.jotwell.com/2015/07/

Are There Too Many Patents To Search? – A Response, NEW PRIVATE LAW, July 2, 2015,

https://blogs.law.harvard.edu/nplblog/2015/07/02/are-there-too-many-patents-to-search-a-response-ted-

sichelman/

The Innovation Act’s Fee-Shifting is Biased against Patent Holders and Will Likely Increase PAE Activity,

PATENTLY-O, Mar. 4, 2015, http://patentlyo.com/patent/2015/03/counterpoint-sichelman-

innovation.html.

Ted Sichelman – March 2018 Page 8 of 25

Most Cited IP Law Articles over the Last 10 Years, WRITTEN DESCRIPTION, Sept. 23, 2014,

http://writtendescription.blogspot.com/2014/09/most-cited-ip-law-articles-over-last-10_24.html.

Are Patent Damages Uncertain?, JOTWELL, June 30, 2014, http://ip.jotwell.com/are-patent-damages-

uncertain/

Why the Government Should (Sometimes) Help Companies “Cheat” on their Taxes, THE CONGLOMERATE,

June 28, 2014, http://www.theconglomerate.org/2014/06/why-the-government-should-sometimes-help-

companies-cheat-on-their-taxes.html#disqus_thread

The Tricky Business of Tesla’s Patent “Give-Away”, THE CONGLOMERATE, June 20, 2014,

http://www.theconglomerate.org/2014/06/the-tricky-business-of-teslas-patent-give-

away.html#disqus_thread

The IP Transaction “Gap”, THE CONGLOMERATE, June 16, 2014,

http://www.theconglomerate.org/2014/06/the-ip-transaction-gap.html#disqus_thread

Stop Bashing Academics: Why Mark Lemley, Peter Menell, and Rob Merges are Highly Qualified to Teach

and Write about Patent Law, PATENTLY-O, Apr. 17, 2014,

http://patentlyo.com/patent/2014/04/sichelman-academics-qualified.html#comment-213789.

Patent Remedies Should Not Depend on a Patentholder’s Business Model, PATENTLY-O, Mar. 14, 2014,

http://patentlyo.com/patent/2014/03/remedies-patentholders-business.html#comment-199046.

Legal Analysis of Patent Claims Is Required to Determine Pervasiveness of Gene Patents, 6 GENOME

MEDICINE 14 (2014) (with Shine Tu, Christopher Holman, Adam Mossoff, Michael Risch, Jorge L.

Contreras, Yaniv Heled, Gregory Dolin & Lee Petherbridge), available at

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2402417.

High Court Case Could Change IP Litigation Strategies, DAILY JOURNAL (Los Angeles & San Francisco),

Nov. 12, 2012.

5 Things to Do Before the New Patent Law Takes Full Effect, XCONOMY, May 2, 2012,

http://www.xconomy.com/san-degio/2012/05/02/5-things-to-do-before-new-patent-law-takes-full-

effect/

What We Said (and Didn’t Say) in the Berkeley Patent Study, PATENTLY-O, Aug. 5, 2011 (with Robert

Merges & Pam Samuelson), http://www.patentlyo.com/patent/2011/08/guest-post-what-we-said-and-

didnt-say-in-the-berkeley-patent-study.html

Fixing the “First Inventor to File” One-Year Grace-Period Provision of the Patent Reform Bills,

PATENTLY-O, April 12, 2011, http://www.patentlyo.com/patent/2011/04/fixing-the-first-inventor-to-

file-one-year-grace-period-provision-of-the-patent-reform-bills.html

Patenting by Entrepreneurs: The Berkeley Patent Survey, PATENTLY-O, July 18-20, 2010,

http://www.patentlyo.com/patent/2010/07/patenting-by-entrepreneurs-the-berkeley-patent-survey-part-

i-of-iii-1.html (Part I), http://www.patentlyo.com/patent/2010/07/patenting-by-entrepreneurs-the-

berkeley-patent-survey-part-ii-of-iii.html (Part II), http://www.patentlyo.com/patent/2010/07/patenting-

by-entrepreneurs-the-berkeley-patent-survey-part-iii-of-iii.html (Part III).

Why Bilski Benefits Startup Companies, PATENTLY-O, June 29, 2010,

http://www.patentlyo.com/patent/2010/06/guest-post-why-bilski-benefits-startup-

companies.html.

Are Appeals at the Federal Circuit a “Coin Flip”?, PATENTLY-O, Apr. 9, 2010,

http://www.patentlyo.com/patent/2010/04/are-appeals-at-the-federal-circuit-a-coin-

flip.html#comments.

Ted Sichelman – March 2018 Page 9 of 25

Disclosing “Related Cases” at the Federal Circuit: Eli Lilly’s Written Description “Secret”, PATENTLY-O,

Dec. 3, 2009, http://www.patentlyo.com/patent/2009/12/disclosing-related-cases-at-the-federal-circuit-

eli-lillys-written-description-secret.html.

Top 10 Patent Strategies, THE DAILY TRANSCRIPT (San Diego), Sept. 30, 2009.

Book Review, CALIFORNIA LAWYER (May 2009) (reviewing RICHARD CAULEY, WINNING THE PATENT

DAMAGES CASE: A LITIGATOR’S GUIDE TO ECONOMIC MODELS AND OTHER DAMAGE STRATEGIES

(2009)), available at http://www.callawyer.com/story.cfm?eid=901299&evid=1.

Drafting Patent Infringement Complaints, 11 INTELLECTUAL PROPERTY STRATEGIST, May 2005.

Effectively Using Partial Summary Judgment in Patent Cases, 11 INTELLECTUAL PROPERTY STRATEGIST,

Jan. 2005.

OTHER PUBLICATIONS

Hohfeld Returns to the Supreme Court, NEW PRIVATE LAW, Apr. 29, 2016,

https://blogs.harvard.edu/nplblog/2016/04/29/hohfeld-returns-to-the-supreme-court-ted-sichelman/

Most-Cited Tort Law Articles Published in the Last 25 Years, NEW PRIVATE LAW, Mar. 4, 2016,

https://blogs.harvard.edu/nplblog/2016/03/04/most-cited-tort-law-articles-published-in-the-last-25-

years-ted-sichelman/

Fifteenth International Conference on Artificial Intelligence and Law (ICAIL 2015), 37 AI MAGAZINE 107

(2015) (with Katie Atkinson, Jack Conrad, and Anne Gardner), available at

http://www.aaai.org/ojs/index.php/aimagazine/article/view/2633.

Reinvigorating the Public-Private Law Divide: A Hohfeldian Construction of the State, NEW PRIVATE

LAW, Oct. 19, 2015, http://blogs.law.harvard.edu/nplblog/2015/10/19/reinvigorating-the-public-private-

law-divide-a-hohfeldian-construction-of-the-state-ted-sichelman/

Top 25 Most Cited Contract Law Articles Published in the Last 25 Years, NEW PRIVATE LAW, Sept. 10,

2015, http://blogs.law.harvard.edu/nplblog/2015/09/10/top-25-most-cited-contract-law-articles-

published-in-the-last-25-years-ted-sichelman/

Top 25 Most Cited Real Property Law Articles Published in the Last 25 Years, NEW PRIVATE LAW, June 2,

2015, http://blogs.law.harvard.edu/nplblog/2015/06/02/top-25-most-cited-real-property-law-articles-

published-in-the-last-25-years-ted-sichelman/

A Hohfeldian Take on the Public-Private Law Divide, NEW PRIVATE LAW, May 15, 2015,

http://blogs.law.harvard.edu/nplblog/2015/05/15/a-hohfeldian-take-on-the-public-private-law-divide/

Most Cited Private Law Articles Published in the Last 25 Years, NEW PRIVATE LAW, April 22, 2015,

http://blogs.law.harvard.edu/nplblog/2015/04/22/most-cited-private-law-articles-published-in-the-last-

25-years/

Factors Used to Determine Whether an ERISA Fiduciary or Administrator Has Wrongfully Denied

Benefits, in STEVEN SACHER, ET AL., EMPLOYEE BENEFITS LAW (3d ed. 2010) (with Matthew

Jedreski).

Getting to the Substance, DAILY JOURNAL (Los Angeles & San Francisco), Nov. 9, 2006 (co-author).

3rd Circuit Splits from Other Courts on Fair Opportunity Doctrine, DAILY JOURNAL (Los Angeles & San

Francisco), July 24, 2006 (co-author).

Circuit Splits Affect Conflicts of Authority, DAILY JOURNAL (Los Angeles & San Francisco), June 14, 2006

(co-author).

Circuit Splits of Interest to Business, CHICAGO DAILY LAW BULLETIN, June 9, 2006 (co-author).

Ted Sichelman – March 2018 Page 10 of 25

Splits Involve Issues Affecting Business, Government, Workers, DAILY JOURNAL (Los Angeles & San

Francisco), May 18, 2006 (co-author).

When Private Enterprise Hits Public Agencies, Splits Arise, DAILY JOURNAL (Los Angeles & San

Francisco), April 13, 2006 (co-author).

Circuit Splits Range From Securities to Attorney Fees, DAILY JOURNAL (Los Angeles & San Francisco),

Mar. 30, 2006 (co-author).

From Banking to Bankruptcy, Various Views Arise on Circuits, DAILY JOURNAL (Los Angeles & San

Francisco), Mar. 8, 2006 (co-author).

Decisions Reveal Splits Over Approach to Discrimination, DAILY JOURNAL (Los Angeles & San

Francisco), Jan. 4, 2006 (co-author).

Circuits Split on How to Test When Trademark Use is Fair, DAILY JOURNAL (Los Angeles & San

Francisco), Dec. 2, 2005 (co-author).

Environmental, Fee Issues Bring Splits Among Circuits, DAILY JOURNAL (Los Angeles & San Francisco),

Oct. 26, 2005 (co-author).

Circuit Splits Involve Cases On U.S. and Foreign Issues, DAILY JOURNAL (Los Angeles & San Francisco),

June 21, 2005 (co-author).

Bankruptcy, Labor, Criminal Cases Result in Circuit Splits, DAILY JOURNAL (Los Angeles & San

Francisco), Mar. 23, 2005 (co-author).

CONFERENCES & WORKSHOPS ORGANIZED

IP Speaker Series, University of San Diego School of Law (2012-present).

The Patent Conference 8 (PatCon 8), University of San Diego School of Law (March 2018).

California Patent Law Scholars Roundtable, University of San Diego School of Law (December 2016)

Wesley Newcomb Hohfeld Centennial Workshop, Yale Law School (October 2016).

Workshop on Legal Text, Document, and Corpus Analytics, University of San Diego School of Law (June

2016).

The Sixth Annual University of San Diego School of Law Patent Conference (January 2016).

International Conference on AI & Law (ICAIL) 2015 (June 2015).

Predicting Legal Outcomes, Stanford Law School (May 2015).

The Fifth Annual University of San Diego School of Law Patent Conference (January 2015).

The Patent Conference 4 (PatCon 4), University of San Diego School of Law (April 2014).

Workshop in Computation, Mathematics, and the Law, University of San Diego School of Law (Mar.

2014).

The Future of Patent Remedies, University of San Diego School of Law, San Diego, CA (January 2013).

The Patent Office Visits San Diego, University of San Diego School of Law (February 2012).

The Second Annual University of San Diego School of Law Patent Law Conference (January 2012).

SoCal IP Profs Workshop, Thomas Jefferson School of Law (May 2011).

The First Annual University of San Diego School of Law Patent Law Conference (December 2010).

SoCal IP Profs Workshop, UC Irvine School of Law (May 2010).

Ted Sichelman – March 2018 Page 11 of 25

Bay Area IP & Privacy Law Research Fellows & LLMs Workshop, University of California, Berkeley,

School of Law (May 2009).

CONFERENCE & WORKSHOP PRESENTATIONS

The Evolution of Obviousness, PatCon 8, The Patent Conference, University of San Diego School of Law,

San Diego, CA (May 2016)

Revisiting Labor Mobility in Innovation Markets, American Intellectual Property Law Association (AIPLA)

Trade Secret Summit, San Diego, CA (May 2016)

Modeling Legal Modularity, American Law & Economics Association Annual Meeting, Yale Law School

(May 2017) (presented by Henry Smith)

American Intellectual Property Law Association (AIPLA) Spring Meeting Panelist, Venue: Does It Really

Matter?, San Diego, CA (May 2017)

Very Tight ‘Bundles of Sticks’: Hohfeld’s Complex Jural Relations, University of San Diego School of Law

Faculty Workshop (May 2017)

An Economic Model of Patent Exhaustion, Antonin Scalia Law School – George Mason University, Center

for Protection of Intellectual Property Edison Fellowship Meeting, Austin, TX (Jan. 2017) (with Olena

Ivus)

An Economic Model of Patent Exhaustion, California Patent Law Scholars Roundtable, University of San

Diego School of Law (December 2016)

Very Tight ‘Bundles of Sticks’: Hohfeld’s Complex Jural Relations, Wesley Newcomb Hohfeld Centennial

Workshop, Yale Law School (October 2016)

Innovation Factors for Reasonable Royalties, IP Scholars Conference, Stanford Law School (Aug. 2016)

Innovation Factors for Reasonable Royalties, George Mason University School of Law Center for

Protection of Intellectual Property Summer Conference, Seattle, WA (Aug. 2016)

Innovation Factors for Reasonable Royalties, University of Texas School of Law Patent Damages

Conference, Austin, TX (June 2016)

Revisiting Labor Mobility in Innovation Markets, American Law & Economics Association Annual

Meeting, Harvard Law School (May 2016)

Revisiting Labor Mobility in Innovation Markets, IP Colloquium, University of Pennsylvania School of

Law (Mar. 2016)

Patents as Hedges, IP Workshop, Cardozo Law School (Mar. 2016)

Patents, Prizes, and Property, Intellectual Property & Private Law Conference, Harvard Law School (Mar.

2016)

Revisiting Labor Mobility in Innovation Markets, Law & Entrepreneurship Workshop, University of San

Diego School of Law (Jan. 2016)

Patents as Hedges, University of San Diego School of Law Annual Patent Law Conference (Jan. 2016)

Revisiting Labor Mobility in Innovation Markets, Harvard Law School Faculty Workshop (Jan. 2016)

Patents as Hedges, Thomas Edison Innovation Fellowship Meeting, George Mason University School of

Law Center for Protection of Intellectual Property, Sanibel Island, FL (Nov. 2015)

Patents as Hedges, University of San Diego School of Law IP Speaker Series (Nov. 2015)

Ted Sichelman – March 2018 Page 12 of 25

The Role of Academics in Policymaking in Patent Law, Discussion Leader, Microsoft IP Academic

Roundtable (Oct. 2015)

Patents as Hedges, University of San Diego School of Law Faculty Colloquium (Oct. 2015)

Moderator, Decade of Discovery, University of San Diego School of Law (Oct. 2015)

Patents as Hedges, Thomas Edison Innovation Fellowship Meeting, George Mason University School of

Law Center for Protection of Intellectual Property, Arlington, VA (Sept. 2015).

Trademarks as Club Goods, Intellectual Property Scholars Conference, DePaul University College of Law,

Chicago, IL (Aug. 2015) (with Abraham Bell).

Predicting Obviousness, International Conference on AI & Law (ICAIL), University of San Diego School

of Law (June 2015) (with Ryan Holte).

From Predictive Tennis Analytics to Predictive Legal Analytics, Predicting Legal Outcomes Workshop,

Stanford Law School (May 2015).

Does Patent Litigation Decrease R & D?, The Patent Conference, University of Kansas School of Law

(Apr. 2015) (with Shawn Miller).

Patents as Hedges, Thomas Edison Innovation Fellowship Meeting, George Mason University School of

Law Center for Protection of Intellectual Property, San Diego, CA (Mar. 2015).

Does Patent Litigation Decrease R & D?, Works in Progress in Intellectual Property (WIPIP) Conference,

U.S. Patent & Trademark Office, Alexandria, VA (Feb. 2015) (with Shawn Miller).

Revisiting Labor Mobility in Innovation Markets, Works in Progress in Intellectual Property (WIPIP)

Conference, U.S. Patent & Trademark Office, Alexandria, VA (Feb. 2015).

Trademarks as Club Goods, Works in Progress in Intellectual Property (WIPIP) Conference, U.S. Patent &

Trademark Office, Alexandria, VA (Feb. 2015) (with Abraham Bell).

Revisiting Labor Mobility in Innovation Markets, 5th Annual University of San Diego School of Law

Patent Law Conference (Jan. 2015).

Commentator, Conference on Empirical Legal Studies, University of California, Berkeley, School of Law

(Nov. 2014).

Discussant, Thomas Edison Innovation Fellowship Meeting, George Mason University School of Law

Center for Protection of Intellectual Property, Scottsdale, AZ (Nov. 2014).

The Origins of Patent Law in the Venetian Republic, Todd Inn of Court, San Diego (Oct. 2014).

Patent Law Before the Supreme Court in 2014, Thomson Reuters Patent Disputes Forum, San Diego, CA

(Sept. 2014).

Retracing the Venetian Origins of Patents, Professional and Continuing Education Program, University of

San Diego (July 2014).

Do Economic Downturns Dampen Patent Litigation?, American Law & Economics Associations Annual

Meeting, University of Chicago (May 2014) (presented by Shawn Miller).

Discussant, Software Patents Roundtable, George Mason University School of Law Center for Protection of

Intellectual Property, Cape Coral, FL (May 2014).

Discussant, CodeX Computational Law Workshop, Stanford Law School, Palo Alto, CA (May 2014).

Retracing the Venetian Origins of Patents, Osher Institute, University of California, San Diego (Apr. 2014).

Retracing the Venetian Origins of Patents, The Patent Conference 4, University of San Diego School of

Law, San Diego, CA (Apr. 2014).

Ted Sichelman – March 2018 Page 13 of 25

Modeling Legal Modularity, Center for Computation, Mathematics & the Law Workshop, University of

San Diego School of Law, San Diego, CA (Mar. 2014) (with Henry Smith).

The Mathematical Structure of the Law, Center for Computation, Mathematics & the Law Workshop,

University of San Diego School of Law, San Diego, CA (Mar. 2014).

Startups & Secrecy: An Empirical Study, Law & Entrepreneurship Retreat, University of Washington

School of Law, Seattle, WA (Feb. 2014).

Retracing the Venetian Origins of Patents, Works in Progress in IP Conference, Santa Clara Law School,

Santa Clara, CA (Feb. 2014).

Startups & Secrecy: An Empirical Study, Works in Progress in IP Conference, Santa Clara Law School,

Santa Clara, CA (Feb. 2014) (with David Levine).

Commentator, UCLA Entertainment, Media, and Intellectual Property Colloquium Workshop, UCLA

School of Law, Los Angeles, CA (Nov. 2013).

Reflections on the America Invents Act, Patent Law & Patent Searches, San Diego Center for Systems

Biology, University of California, San Diego (Nov. 2013).

The Vonage Trilogy: A Case Study in “Patent Bullying,” IP Speaker Series, University of San Diego

School of Law (Oct. 2013).

Induced Infringement after Global-Tech v. SEB, Intellectual Property Owners (IPO) webinar (Sept. 2013).

Commentator, Workshop on Empirical Patent Law, University of Illinois School of Law (Sept. 2013).

Do Economic Downturns Dampen Patent Litigation?, Workshop on Empirical Patent Law, University of

Illinois School of Law (Sept. 2013).

Patents as Promoters of Competition: The Guild Origins of Patent Law in The Venetian Republic,

International Society for the History and Theory of Intellectual Property, Université Paris Diderot,

France (June 2013).

Enforcement as Substance in Tax Compliance, The Gruter Institute Annual Conference, Squaw Valley,

California (May 2013).

Quantifying Legal Entropy, The Gruter Institute Annual Conference, Squaw Valley, California (May 2013).

Minding Patent Infringement, The Patent Conference 3, Chicago-Kent School of Law (April 2013).

Minding Patent Infringement, Patents, Innovation & Freedom to Use Ideas, Loyola of Chicago Law School

(April 2013).

Purging Patent Law of Private Law Remedies, IP Speaker Series, University of San Diego School of Law

(April 2013).

Patents as Promoters of Competition: The Guild Origins of Patent Law in The Venetian Republic, Faculty

Colloquium, University of San Diego School of Law (November 2012).

Minding Patent Infringement, Works in Progress in Intellectual Property conference, Seton Hall Law

School, Newark, NJ (February 2013).

The Mathematical Structure of the Law, Private Law Workshop, Harvard Law School, Cambridge, MA

(February 2013).

Purging Patent Law of Private Law Remedies, DePaul University College of Law, Chicago, IL (February

2013).

Purging Patent Law of Private Law Remedies, Washington University in St. Louis School of Law, St.

Louis, MO (February 2013).

Ted Sichelman – March 2018 Page 14 of 25

Purging Patent Law of Private Law Remedies, The Future of Patent Remedies, University of San Diego

School of Law, San Diego, CA (January 2013).

Purging Patent Law of Private Law Remedies, Solutions to the Software Patent Problem, Santa Clara

University School of Law, Santa Clara, CA (November 2012).

Purging Patent Law of Private Law Remedies, UCLA Entertainment, Media, and Intellectual Property

Colloquium Workshop, UCLA School of Law, Los Angeles, CA (November 2012).

Patents as Promoters of Competition: The Guild Origins of Patent Law in The Venetian Republic,

Qualcomm, Inc., San Diego, CA (November 2012).

Intellectual Property Rights, World Resources Sim Center, High Noon Lunch Series, San Diego, CA

(August 2012).

Patents as Promoters of Competition: The Guild Origins of Patent Law in The Venetian Republic, IP

Scholars Conference, Stanford Law School (August 2012).

The Patent Wars, Osher Institute, University of California, San Diego (August 2012).

How the New Patent Law Affects Engineers, San Diego IEEE, San Diego, CA (July 2012).

A Panel Discussion Markets for Patent Scope, Patent Conference 2, Boston College Law School (May

2012).

Patents as Promoters of Competition: The Guild Origins of Patent Law in The Venetian Republic,

Foundations of Intellectual Property Conference, University of San Diego School of Law (May 2012).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey,

AIPLA Electronic and Computer Patent Law Summit, University of San Diego School of Law (April

2012).

Funk Brothers’ Myriad Failures, Intellectual Property at the Edge Conference, Columbia University School

of Law (April 2012).

Moral Coaxing, International Conference on Contract Law, Thomas Jefferson School of Law, San Diego,

CA (March 2012) (presented by Jordan Barry).

The Transition from First to Invent to First Inventor to File, IP Counsel Forum, San Jose, CA (March

2012).

Communities of Innovation: A Critique, Law & Entrepreneurship Retreat, Indiana University School of

Law (February 2012).

Third Party Participation in the America Invents Act, The Patent Office Visits San Diego, University of

San Diego School of Law (February 2012).

Purging Patent Law of Private Law Remedies, IP In the Trees Speakers’ Series, Lewis & Clark School of

Law, Portland, OR (January 2012).

Some Reflections (and a Suggestion) on the America Invents Act, The Second Annual University of San

Diego School of Law Patent Law Conference (January 2012).

Measured Tax Enforcement, University of San Diego School of Law Faculty Colloquium (December

2011).

The America Invents Act and Patent Examination, Medical Device Technology Partnership Meeting, U.S.

Patent & Trademark Office, Washington, DC (November 2011).

Purging Patent Law of Private Law Remedies, Faculty Workshop, George Washington University Law

School, Washington, DC (November 2011).

Startups & The Patent System: A Narrative, Law & Society Perspectives on Intellectual Property, Golden

Gate University Law School, San Francisco, CA (November 2011)

Ted Sichelman – March 2018 Page 15 of 25

Patent Reform Legislation Has Been Enacted – Now What?, RPX Fall Conference, Palo Alto, CA (October

2011).

Purging Patent Law of Private Law Remedies, Faculty Workshop, Northwestern Law School (September

2011).

Commercialization of IP and the America Invents Act of 2011, IP Seminar: Assets, Licensing and Pooling,

UNLV School of Law (September 2011).

Purging Patent Law of Private Law Remedies, IP Scholars Conference, DePaul Law School (August 2011).

Proving “Comparable” Licensing Rates in Reasonable Royalty Determinations, Licensing Executives

Society Meeting, Fenwick & West, Mountain View, CA (May 2011)

The Mathematical Structure of Legal Rights, Program on Law & Computation, University of Houston Law

School (April 2011).

Minding Patent Infringement, The Patent Conference, University of Kansas School of Law (April 2011).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey, NYU

School of Law, Innovation Workshop (March 2011).

Panelist, A New Standard for Inducing Infringement?, Webinar, Intellectual Property Owners (IPO) IP Chat

Channel (February 2011).

Law Students Working for Startups, TI:GER Graduate Education in Technology Commercialization,

Georgia Tech College of Management (February 2011).

Purging ‘Private Law’ from Patent Law Remedies, Stanford-Samsung Patent Law Remedies Conference,

Stanford Law School (February 2011).

The Mathematical Structure of Legal Rights, Society for Evolutionary Analysis in Law Annual Meeting,

Loyola of Los Angeles Law School (February 2011).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey,

University of Southern California, Marshall School of Business (February 2011).

Life After Bilski, The Future of Patents: Bilski and Beyond, Stanford Law School (presented by Mark

Lemley) (January 2011).

Minding Patent Infringement, Intellectual Property Workshop, UC Hastings School of Law (January 2011).

Do Economic Downturns Dampen Patent Litigation?, Empirical Studies in Intellectual Property

Conference, University of San Diego School of Law (December 2010).

Do Economic Downturns Dampen Patent Litigation?, Empirical Studies in Patent Litigation Workshop,

Northwestern Law School (November 2010).

Commentator, SoCal IP Profs Fall Colloquium, UCLA Law School (November 2010)

Do Economic Downturns Dampen Patent Litigation?, Conference on Empirical Studies, Yale Law School

(presented by Alan Marco) (November 2010).

Bilski & Patentable Subject Matter, University of Southern California Law School, IP Law Student

Association (October 2010).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey,

Whittier Law School (October 2010).

Do Economic Downturns Dampen Patent Litigation?, IP Colloquium, University of Virginia Law School

(October 2010).

Fuzzy Taxes, Midwest Law & Economics Association Conference, University of Colorado School of Law

(October 2010).

Ted Sichelman – March 2018 Page 16 of 25

Do Economic Downturns Dampen Patent Litigation?, Faculty Workshop, University of Illinois School of

Law (October 2010).

Markets for Patent Scope, Conference on “The Complex Economics of Patent Scope,” University of

Indiana School of Law (September 2010).

Probabilistic Patent Races, IP Scholars Conference, University of California, Berkeley, School of Law

(August 2010).

Do Entrepreneurs Read Patents?, Workshop on Technical Disclosure, Boston University Law School (June

2010).

Quantum Game Theory and Cooperation in Intellectual Property, Center for Law & Economics Workshop,

University of Southern California Law School (April 2010).

Patenting by Entrepreneurs: An Empirical Study, Junior Scholars in Intellectual Property, Michigan State

University School of Law (April 2010).

Bilski & Patentable Subject Matter, University of Southern California Law School, IP Law Student

Association (March 2010).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey, Boston

University Law School (March 2010).

Do Economic Downturns Dampen Patent Litigation?, IP Scholars Roundtable, Drake University Law

School, Des Moines, Iowa (March 2010).

Do Economic Downturns Dampen Patent Litigation?, IP Counsel Forum, San Jose, CA (March 2010).

The Mathematical Structure of Legal Rights, University of San Diego School of Law Colloquium (January

2010).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey,

Colorado Bar Association, Intellectual Property Section, Denver (January 2010).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey, Bar-

Ilan Law School, Tel-Aviv, Israel (January 2010).

Commercializing Patentable Subject Matter, The Future of Subject Matter Eligibility After In re Bilski,

Bar-Ilan Law School, Tel-Aviv, Israel (January 2010).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey,

Conference on Empirical Legal Studies, University of Southern California Law School (November

2009).

Empirical Studies of Patent Litigation, Northwestern Law School (discussant) (November 2009).

Myths of (Un)Certainty at the Federal Circuit, The Federal Circuit as an Institution, Symposium, Loyola of

Los Angeles Law School (November 2009).

The Legality of “Rogue” Bots: MDY Industries v. Blizzard Entertainment, American Bar Association

Webinar (moderator) (October 2009).

The “Entrant’s Dilemma”: Patent Cross Licensing & Startup Innovation, Patent Cross Licensing:

Academic and Practical Perspectives, UC Berkeley School of Law (October 2009).

Quantum Game Theory and Cooperation in Intellectual Property, Annual Meeting of the Midwestern Law

& Economics Association, Notre Dame Law School (October 2009).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey, Works

in Progress in Intellectual Property, Seton Hall Law School (October 2009).

Ted Sichelman – March 2018 Page 17 of 25

Patent Law Colloquium, Santa Clara Law School (discussant) (September 2009).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey, West

Coast Research Symposium, University of Washington School of Law (September 2009).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey, Hosier

Scholars Series, DePaul Law School (September 2009).

Patent Bullies: How Industry Incumbents Abuse the Patent System, Conference on Innovation and

Communication Law, Louisville Law School (August 2009).

Patent Bullies: How Industry Incumbents Abuse the Patent System, Intellectual Property Scholars

Conference, Cardozo Law School (August 2009).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey,

National Bureau of Economic Research, Intellectual Property Summer Session, Boston (July 2009).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey,

Kauffman Foundation Summer Legal Institute, Dana Point, California (July 2009).

Commercializing Patents, Annual Conference of the International Society for New Institutional Economics,

University of California, Berkeley (June 2009).

The Vonage Trilogy: A Case Study in “Patent Bullying,” Patents and Entrepreneurship in Business and

Information Technologies, George Washington University (June 2009).

Patenting by Entrepreneurs: An Empirical Study, The Economics and Law of the Entrepreneur, Searle

Center, Northwestern University School of Law (with Stuart Graham) (June 2009).

Patent Bullies: How Industry Incumbents Abuse the Patent System, Law & Society Association Annual

Meeting, Denver (May 2009).

Quantum Game Theory and Cooperation in Intellectual Property, Annual Meeting of the American Law &

Economics Association, University of San Diego School of Law (May 2009).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey, San

Diego Intellectual Property Law Association (May 2009).

The 2008 Kauffman-Berkeley Patent Survey: Why Do Entrepreneurs Patent (And Not)? Creativity, Law and

Entrepreneurship Workshop, Institute for Legal Studies, University of Wisconsin Law School (with

Stuart Graham) (April 2009).

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey,

Centers & Clinics Research Workshop, UC Berkeley School of Law; Graduate Education in

Technology Commercialization Workshop, Georgia Tech School of Management (April 2009).

Commercializing Patents, Junior Scholars in Intellectual Property, Michigan State University School of

Law (March 2009).

Royalty Stacking Roundtable, University of San Diego School of Law (discussant) (March 2009).

How (and Why) are US Entrepreneurs Using Patents? Evidence from the 2008 Kauffman-Berkeley Patent

Survey, Innovation Seminar, Haas School of Business, UC Berkeley (with Stuart Graham) (February

2009).

Commercializing Patents, Faculty Workshops at Benjamin Cardozo Law School, Boston University Law

School, Emory Law School, Seattle University Law School, SMU Dedman Law School, Thurgood

Marshall Law School, University of Houston Law School, University of Miami Law School, University

of Oregon Law School, and University of San Diego Law School (November-December 2008).

Ted Sichelman – March 2018 Page 18 of 25

The Kauffman-UC Berkeley Entrepreneurial Companies Litigation & Licensing Survey, 2008 Kauffman

Symposium on Entrepreneurship and Innovation Data, Washington, D.C. (presented by Stuart Graham)

(November 2008).

Quantum Game Theory and Cooperation in Intellectual Property, 2008 Works-in-Progress IP Conference,

Tulane Law School (October 2008).

Some (Very) Preliminary Results of the 2008 UC Berkeley Patents & Entrepreneurship Survey, Bay Area

IP Professors, Stanford Law School (presented with Stuart Graham) (September 2008).

The Commercialization Interest in Intellectual Property Law, IP Scholars Conference 2008, Stanford Law

School (August 2008).

The Kauffman-UC Berkeley Entrepreneurial Companies Litigation & Licensing Survey, Kauffman

Foundation Data Symposium Workshop, National Science Foundation, Arlington, VA (July 2008).

Benefit Disputes after MetLife v. Glenn: What’s the Standard of Review? American Bar Association, Live

Webcast (July 2008).

The Role of Centers in Multidisciplinary Curricula, Kauffman Foundation Workshop on Technology

Entrepreneurship and Commercialization, Georgia Tech University (May 2008).

Recent U.S. Supreme Court and Federal Circuit Patent Cases, Irell & Manella, Los Angeles, CLE course

(Summer 2006).

Drafting Subpoenas in State & Federal Court, Irell & Manella, Los Angeles, CLE course (Fall 2005).

Numerous presentations at venture capital events, including VentureNet, Growth Capital, UCSD Connect,

LARTA Institute, Los Angeles Venture Association (LAVA), Los Angeles Business Technology

Center, Keiretsu Forum, Tech Coast Angels, Pasadena Angels, and Sand Hill Angels (2001-03).

LEGAL & BUSINESS EXPERIENCE

Academic Expert Group, LLC

Progress, LLP & Other Clients San Diego, CA 2009-Present

Attorney & Consultant

Provide legal services and consult for a variety of companies, individuals, and law firms on a part-time

basis. (All work is performed as an independent contractor unless noted otherwise.)

Of Counsel at Progress, LLP (San Diego)

o Confidential analysis of patent portfolios for potential sale and licensing.

o Coordinating the formation of an appellate practice group.

Confidential IP licensing and other transactional work for a medical device company.

Developing and assisting in the launch of an electronic casebook platform for LawCarta.

Performing data analytics for professional tennis players for Prediction Tennis, LLC.

Served as an expert in a USPTO reexamination proceeding for Bayer CropSciences NV.

Performed confidential two-year patent litigation data collection and analysis project as part of

Academic Expert Group, LLC, for a publicly traded company.

Developed strategies and drafted a confidential business plan for a company planning to challenge

third-party patents at the USPTO.

Managed and negotiated confidential sale of patent portfolio for a medical device company.

Conducted confidential prior art analysis for a Voice over IP (VoIP) company.

Served as an expert (under protective orders) in overseas patent infringement cases involving wireless

technologies.

Ted Sichelman – March 2018 Page 19 of 25

Heller Ehrman LLC San Francisco, CA 2007-2008

Associate

Practiced in the intellectual property litigation, appellate, and venture law groups, handling patent

litigation, federal court appeals, and IP transactions & counseling.

Representative matters included:

General Electric v. SonoSite (W.D. Wis.). Represented an early-stage company, SonoSite, in a patent

infringement action involving ultrasound technology.

Analyzed the impact of Verizon v. Vonage on a start-up client for potential venture capital investors.

Confidential counseling on IP portfolio development for an early-stage software company.

Irell & Manella LLP Los Angeles, CA 2004-2006

Associate

Practiced in the litigation, intellectual property, and appellate groups, handling patent litigation, state &

federal court appeals, and IP transactions & counseling.

Representative matters included:

Net2Phone v. eBay/Skype (D.N.J.) and Peer Communications v. eBay/Skype (E.D. Tex.). Represented

Skype in patent litigation involving its Voice over IP (VoIP) technology.

Biosense Webster v. Endocardial Solutions (C.D. Cal.), a patent action between subsidiaries of

Johnson & Johnson and St. Jude Medical involving heart mapping systems.

Unified Dispatch, Inc. (UDI) Los Angeles, CA 2001-2004

Founder & CEO

Founded and ran a software and services company providing voice recognition and call center systems to

the ground transportation industry.

Raised three rounds of financing from leading venture capital and angel investment groups.

Lead inventor on patent and patent application, “Automated Transportation Call-Taking System.”

Managed intellectual property, including patents, copyrights, and trademarks.

1-800-TAXICAB, Inc. Los Angeles, CA 1999-2001

Co-Founder & President

Founded a national referral network for taxi service, which routes callers who dial into the toll-free

number 1-800-TAXICAB to local taxi companies.

Raised initial financing from angel groups and private investors.

Hired and managed sales team, engineers, and office staff.

Participated in drafting and negotiation of articles, stockholders’ agreement, options plan, employment

agreements, IP licensing agreements, and term sheets.

McDermott, Will & Emery Miami, FL 1999 (Summer)

Cravath, Swaine & Moore New York, NY 1998 (Summer)

Limbach & Limbach San Francisco, CA 1997 (Summer)

PRO BONO MATTERS & SERVICE

TC Heartland LLC v. Kraft Foods Group Brands LLC (2017). Drafted an amicus brief

(https://ssrn.com/abstract=2929793) signed by 22 academics in an important U.S. Supreme Court case

regarding the forums in which a patent owner can sue a corporate defendant for infringement.

Impression Products, Inc v. Lexmark International, Inc. (2017). Co-drafted amicus brief

(https://ssrn.com/abstract=2923826) signed by 44 academics in a significant U.S. Supreme Court case

concerning the scope of the patent “exhaustion” doctrine, which limits the ability of patent owners to

enforce downstream contractual restrictions against licensees and purchasers.

Ted Sichelman – March 2018 Page 20 of 25

Co-drafted letter to Congress from 28 academics expressing concern with pending bill proposing to restrict

available venues in patent cases (2016), http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2816062.

Submitted comment to the U.S. Patent & Trademark Office providing suggestions to improve patent

quality (2015),

http://www.uspto.gov/sites/default/files/documents/2015quality_f_sichelman_06may2015.pdf.

Co-drafted letter to Congress from 40 academics opposing patent reform bills and describing weaknesses

in empirical studies cited in favor of reform (2015), http://cpip.gmu.edu/wp-

content/uploads/2015/03/Economists-Law-Profs-Letter-re-Patent-Reform.pdf.

Served on Lieutenant Governor of California’s task force on bringing a satellite patent office to California.

Assisted in drafting a comment to the U.S. Patent & Trademark Office (2012).

At the request of San Diego CONNECT, an incubator for startups, drafted proposed statutory language for

the America Invents Act of 2011 for California Representative Zoe Lofgren (2011).

Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011). Drafted amicus brief

(http://papers.ssrn.com/abstract=1734376) in an important Supreme Court case regarding the

appropriate level of scienter for indirect patent infringement, canvassing nearly 150 years in precedent.

Founded SoCal IP Profs, a group of law, economics, and business professors in Southern California who

write in the areas of innovation and intellectual property who meet and present regularly at member

schools. (Spring 2010-present)

Bilski v. Kappos, 130 S. Ct. 3218 (2010). Assisted in drafting an amicus brief

(http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1485043) in a significant Supreme Court case

addressing the boundaries of patentable subject matter, including the patentability of business methods.

The Court ultimately adopted much of the reasoning in the brief.

MetLife v. Glenn, 554 U.S. 105 (2008). Played leading role in an ERISA case decided in our client’s favor

by the U.S. Supreme Court.

Kobs v. United Wisconsin Life Ins. Co., 546 U.S. 1033 (2005). Drafted and filed petition for certiorari and

reply brief for an injured employee in an ERISA action.

Pasquantino v. United States, 544 U.S. 349 (2005). Co-drafted merits-stage reply brief and performed

research in a U.S. Supreme Court case on behalf of petitioners indicted under the Wire Fraud Act.

Kennedy v. Long Term Disability Plan for Empl. of Huntington Banc, 162 Fed. Appx. 578, 579 (6th Cir.

2006). Drafted and filed petition for rehearing en banc in an ERISA case.

Aguinda v. Texaco, Inc., 303 F.3d 470 (2d Cir. 2002). Performed legal research for plaintiff class in an

action against Texaco for its pumping of contaminated crude oil into the Ecuadorian rainforest.

Advisory Board Member, Blue Seals (an environmental non-profit working to protect ocean life).

Academic and Practitioner Advisory Board, Patent Case Management Judicial Guide, Federal Judicial

Center.

MEDIA COVERAGE

Mark Walsh, Troll Hike: Supreme Court Makes it Harder for Patent Litigants to Shop for Favorite

Venues, ABA JOURNAL (July 2017),

http://www.abajournal.com/magazine/article/scotus_patent_troll_venue_shopping (quoting my views

on the effects of the Supreme Court’s decision in TC Heartland).

Terrence Hart, Friday’s Endnotes, COPYHYPE, June 30, 2017, http://www.copyhype.com/2017/06/fridays-

endnotes-063017/ (reviewing Sometimes, Information Wants to be Expensive).

Ted Sichelman – March 2018 Page 21 of 25

Andrew Williams, TC Heartland LLC v. Kraft Foods Group Brands LLC (2017), PATENT DOCS, May 22,

2017, http://www.patentdocs.org/2017/05/tc-heartland-llc-v-kraft-foods-group-brands-llc-

2017.html?utm_source=feedburner&utm_medium=email&utm_campaign=Feed%3A+PatentDocs+%2

8Patent+Docs%29 (discussing amicus brief filed in TC Heartland v. Kraft).

Andrew Williams, TC Heartland LLC v. Kraft Foods Group Brands LLC – 98 Professors Chime In,

PATENT DOCS, Mar. 26, 2017, http://www.patentdocs.org/2017/03/tc-heartland-llc-v-kraft-foods-

group-brands-llc-98-professors-chime-in.html (discussing amicus brief filed in TC Heartland v. Kraft).

Kelly Knaub, Patent Suit Limits Would Aid Tech Giants, Say Profs, LAW360, Aug. 2, 2016,

http://www.law360.com/articles/824140/patent-suit-limits-would-aid-tech-giants-say-profs (reporting

on co-authored letter to Congress regarding the VENUE Act).

Joseph Marks, Group of Academics Voice Opposition to Patent Venue Bill, PATENT TRADE & COPYRIGHT

JOURNAL – DAILY EDITION, Aug. 2, 2016 (reporting on co-authored letter to Congress regarding the

VENUE Act).

Michael Loney, Getty, The Week in IP, MANAGING INTELLECTUAL PROPERTY, Aug. 2, 2016,

http://www.managingip.com/Blog/3575593/Getty-top-patent-practitioner-companies-Donald-Trump-

venue-reform-Stephen-Colbertthe-week-in-IP.html (reporting on co-authored letter to Congress

regarding the VENUE Act).

Dennis Crouch, Letter to Congress from 28 Law Professors & Economists Urging Caution on the VENUE

Act, PATENTLY-O, Aug. 1, 2016, http://patentlyo.com/patent/2016/08/congress-professors-

economists.html (reporting on co-authored letter to Congress regarding a proposed bill to restrict

available venues in patent actions).

Timothy B. Lee, Massachusetts Just Stole an Important Page from Silicon Valley’s Playbook, VOX.COM,

July 1, 2016, http://www.vox.com/2016/4/12/11349248/noncompetes-silicon-valley-route-128 (quoting

my views on noncompete agreements related to my work in Revisiting Labor Mobility in Innovation

Markets).

Dennis Crouch, James Daily: An Empirical Analysis of Some Proponents and Opponents of Patent

Reform, Mar. 8, 2016, http://patentlyo.com/lawjournal/2016/03/empirical-proponents-opponents.html

(commenting on a study examining my co-authored letter to Congress regarding empirical studies in

patent law).

David Pridham & Brad Sheafe, The Top 10 Reasons Why Your Startup Needs Patents, FORBES, Aug. 18,

2015, http://www.forbes.com/sites/forbesleadershipforum/2015/08/18/the-top-10-reasons-why-your-

startup-needs-patents/ (discussing Patenting by Entrepreneurs article).

Lisa Larrimore Ouellette, Janet Freilich vs. Ted Sichelman on Patent Searching, WRITTEN DESCRIPTION,

July 3, 2015, http://writtendescription.blogspot.com/2015/07/janet-freilich-vs-ted-sichelman-on.html

(discussing a debate on patent searching on the New Private Law blog).

Michael Risch, Only Patent Owners Are Despicable Enough to Pierce the Corporate Veil, IPWATCHDOG,

June 21, 2015, http://www.ipwatchdog.com/2015/06/21/only-patent-owners-are-despicable-enough-to-

pierce-the-corporate-veil/id=58918/ (discussing Patently-O post on fee-shifting).

Daniel Spulber, The Future of Patents and the Fork in the Road, IPWATCHDOG, March 22, 2015,

http://www.ipwatchdog.com/2015/03/22/the-future-of-patents-and-the-fork-in-the-road/id=55950/

(discussing High-Technology Entrepreneurs and the Patent System).

Economists, Law Professors Argue Proposed Patent Reforms Based on ‘Flawed, Unreliable’ Data,

WASHINGTON EXAMINER, March 11, 2015, http://www.washingtonexaminer.com/economists-law-

professors-argue-proposed-patent-reforms-based-on-flawed-unreliable-data/article/feed/2175780

(describing co-drafted letter to Congress opposing patent reform).

Ted Sichelman – March 2018 Page 22 of 25

Peter Fricke, Top Economists, Conservative Activists Warn Congress Not To Mess With Patents, DAILY

CALLER, March 11, 2015, http://dailycaller.com/2015/03/11/top-economists-conservative-activists-

warn-congress-not-to-mess-with-patents/ (describing co-drafted letter to Congress opposing patent

reform).

Sheri Qualters, Professors Issue Conflicting Views of Patent Reform, NATIONAL LAW JOURNAL, March

11, 2015, http://www.nationallawjournal.com/id=1202720328088/Professors-Issue-Conflicting-Views-

of-Patent-Reform?slreturn=20150823122410 (describing co-drafted letter to Congress opposing patent

reform).

Conservatives increase pressure on congressional Republicans to block patent reform, WASHINGTON

TIMES, March 11, 2015, http://www.washingtontimes.com/news/2015/mar/11/conservatives-increase-

pressure-congressional-repu/ (describing co-drafted letter to Congress opposing patent reform).

John Eggerton, Senate Judiciary Schedules Patent Reform Hearing, BROADCASTING & CABLE, March 11,

2015, http://www.broadcastingcable.com/news/washington/senate-judiciary-schedules-patent-reform-

hearing/138686 (describing co-drafted letter to Congress opposing patent reform).

Gene Quinn, Professors Urge Caution on Patent Reform, IP WATCHDOG, March 10, 2015,

http://www.ipwatchdog.com/2015/03/10/professors-urge-caution-on-patent-reform/id=55619/

(describing co-drafted letter to Congress opposing patent reform).

Dennis Crouch, Professor-to-Professor: You Are Wrong about Patent Reform, PATENTLY-O, March 10,

2015, http://patentlyo.com/patent/2015/03/professor-patent-reform.html (describing co-drafted letter to

Congress opposing patent reform).

Michael Risch, Dueling Patent Reform Letters to Congress, WRITTEN DESCRIPTION, March 10, 2015,

http://writtendescription.blogspot.com/2015/03/dueling-patent-reform-letters-to.html (describing co-

drafted letter to Congress opposing patent reform).

Michael Loney, Apple, Samsung, Hall & Oates, USPTO, Under Armour, Patent Reform – This Week in

IP, MANAGING INTELLECTUAL PROPERTY, March 6, 2015

http://www.managingip.com/Blog/3433998/Apple-Samsung-Hall-and-Oates-USPTO-Under-Armour-

patent-reformthe-week-in-IP.html (discussing post on Patently-O examining fee-shifting provisions in

the pending Innovation Act).

Daniel Spulber, The Innovation Act Will Harm Income, Employment, and Economic Growth,

IPWATCHDOG, Feb. 24, 2015, http://www.ipwatchdog.com/2015/02/24/the-innovation-act-will-harm-

income-employment-and-economic-growth/id=55035/ (discussing High-Technology Entrepreneurs

and the Patent System)

David Seto, Networking Do’s and Don’ts, SAN DIEGO LAWYER, Sept./Oct. 2014,

https://www.sdcba.org/index.cfm?pg=store&sa=ViewDetails&ItemID=12285&cat=291 (recounting

advice on “job searching” for law students).

Aparajita Lath, Expired Patents, Injunctions and Commercialization, SPICY IP, May 8, 2014,

http://spicyip.com/2014/05/expired-patents-injunctions-and-commercialization.html (discussing

Commercializing Patents article).

J.B. Ruhl, Racing with the Legal Computation Machine at the Inaugural Center for Computation,

Mathematics, and the Law Workshop, LAW2050.COM, March 24, 2014,

http://law2050.com/2014/03/24/racing-with-the-legal-computation-machine-at-the-inagural-center-for-

computation-mathematics-and-the-law-workshop/ (reporting on inaugural law & computation

workshop).

Ted Sichelman – March 2018 Page 23 of 25

Jackie Hutter, Do Startups Need Patents? Rigorous Study Presents Real Data on Startup Company

Patenting Behavior, IPSTRATEGY.COM, March 5, 2014, http://ipstrategy.com/2014/03/05/do-startups-

need-patents-rigorous-study-presents-real-data-on-startup-company-patenting-behavior/ (reporting on

High-Technology Entrepreneurs article).

Doug Sherwin, Educators Debate Relevance of Bar Exam, SAN DIEGO DAILY TRANSCRIPT, Dec. 9, 2013,

http://www.sddt.com/news/article.cfm?SourceCode=20131209czn&_t=Educators+debate+relevance+o

f+bar+exam#.UqeAmPRDs1I (quoting from an interview on the relevance of the bar examination to

legal practice).

Jason Rantanen, Loyola Law Journal – Panel #2: Shortcomings in the Patent System, PATENTLY-O, Apr.

11, 2013, http://patentlyo.com/patent/2013/04/loyola-law-journal-panel-2-shortcomings-in-the-patent-

system.html (reporting on presentation of Patent Law Revisionism at the Supreme Court?).

Kevin Flannery & Joseph R. Heffern, SHIELD Act May Be a Double-Edged Sword; Intellectual Property,

THE LEGAL INTELLIGENCER, Oct. 8, 2012,

http://www.thelegalintelligencer.com/id=1202573745471/SHIELD-Act-May-Be-a-DoubleEdged-

Sword?slreturn=20150823125049 (relying on findings from Myths of (Un)certainty at the Federal

Circuit).

Marina Krakovsky, Patently Inadequate, 55 COMMUNICATIONS OF THE ACM 18 (July 2012),

http://cacm.acm.org/magazines/2012/7/151237-patently-inadequate/fulltext (quoting from an interview

on the America Invents Act).

Cameron Leigh James, Local Law Schools Seek to Arm Students with Real World Experience, SAN DIEGO

DAILY TRANSCRIPT, May 1, 2012,

http://www.sddt.com/reports/article.cfm?RID=918&SourceCode=20120501crb&_t=Local+law+school

s+seek+to+arm+students+with+real+world+experience#.Uqebl_RDs1I (describing USD’s Technology

Entrepreneurship and IP Clinics).

Mandy Jackson, Generics Benefit from Patent Law, LOS ANGELES DAILY JOURNAL, Feb. 7, 2012 (quoting

from an interview on post-grant patent challenges under the America Invents Act).

Students Helping Startups, SAN DIEGO DAILY TRANSCRIPT, Jan. 31, 2012,

http://www.sddt.com/reports/article.cfm?RID=889&SourceCode=20120131cra&_t=Students+helping+

startups#.UqeAtfRDs1I (reporting on USD’s Technology Entrepreneurship Clinic).

Tony Dutra, Patent Prosecutors, Examiners Try to Bridge Issues at Medical Device Partnership Meeting,

83 PAT. TRADEMARK & COPYRIGHT J. (BNA)139 (Dec. 2, 2011) (describing presentation to U.S.

Patent & Trademark Office medical device examiners).

David Goldman, Will Patent Reform Really Create 200,000 Jobs?, CNN MONEY, Sept. 8, 2011,

http://money.cnn.com/2011/09/08/technology/patent_reform_jobs/index.htm (reporting on High-

Technology Entrepreneurs article).

Tony Dutra, Briefing Completed for High Court Review of Standard for Induced Patent Infringement, 81

PAT. TRADEMARK & COPYRIGHT J. (BNA) 453 (Feb. 11, 2011) (discussing amicus brief filed in

Global-Tech v. SEB).

Doug Sherwin, Panel: Legislators Not Best Ones to Reform Patent System, SAN DIEGO DAILY

TRANSCRIPT, Jan. 19, 2011, http://www.sddt.com/Search/article.cfm?SourceCode=20110119cra#

(reporting on a panel addressing recent topics in intellectual panel).

Ted Sichelman – March 2018 Page 24 of 25

Former Appeals Court Chief Judge Cites PTO Backlog as Key to Economic Recovery, CONNECT

POLICY ENEWS, Aug. 24, 2010 (reporting on High-Technology Entrepreneurs article).

Peter Zura, How Do Economic Downturns Affect Patent Litigation?, THE 271 BLOG, Aug. 10, 2010,

http://271patent.blogspot.com/2010/08/how-do-economic-downturns-affect-patent.html (reporting on

Economic Downturns paper).

Vivek Wadhwa, Why We Need To Abolish Software Patents, PLUGGD.IN, Aug. 10, 2010,

http://www.pluggd.in/abolish-software-patents-297 (citing statistics from and referencing High-

Technology Entrepreneurs article).

Paul R. Michel & Henry R. Nothhaft, Inventing Our Way Out of Joblessness, N.Y. TIMES, A23, Aug. 6,

2010, http://www.nytimes.com/2010/08/06/opinion/06nothhaft.html (citing statistics from and

referencing High-Technology Entrepreneurs article).

Tony Dutra, Berkeley Survey, House Committee Delve into Tie Between IP and Entrepreneurship, 80 PAT.

TRADEMARK & COPYRIGHT J. (BNA) 421 (July 30, 2010) (describing presentation of Patent Bullies at

George Washington School of Law conference).

Mandy Jackson, Clinic Pairs Students with Start-Ups, DAILY JOURNAL, May 21, 2010 (describing the

Technology Entrepreneurship Law Clinic at USD).

USD, Connect Launch Law Clinic for Technology Startups, SAN DIEGO DAILY TRANSCRIPT, Apr. 30,

2010,

http://www.sddt.com/Law/article.cfm?SourceCode=20100430czc&_t=USD+Connect+launch+law+cli

nic+for+technology+startups#.UqedI_RDs1I (announcing the launch of the Technology

Entrepreneurship Clinic).

Alison Frankel, Law Review Shocker: Prof Says Federal Circuit Is Not 'Overly Unpredictable', AMERICAN

LAWYER, April 12, 2010, http://www.americanlawyer.com/id=1202447926460/Law-Review-Shocker:-

Prof-Says-Federal-Circuit-Is-Not-%27Overly-Unpredictable%27?slreturn=20140828020839.

Tony Dutra, Experts: Patent 'Bullying' Hurts Innovation as Much as Non-Practicing Patent Trolls, 78

PAT. TRADEMARK & COPYRIGHT J. (BNA) 421 (June 19, 2009) (discussing High-Technology

Entrepreneurs article).

U.S. Supreme Court: ERISA Insurer’s Dual Role Creates Conflict Of Interest, MEALEY’S LITIGATION

REPORT: ERISA (July 2008) (discussing involvement in MetLife v. Glenn).

Claimant, United States Say Conflict Of Interest Must Be Weighed, MEALEY’S LITIGATION REPORT:

ERISA (April 2008) (discussing involvement in MetLife v. Glenn).

AWARDS

2016 Thorsnes Prize for Outstanding Legal Scholarship, University of San Diego (2016)

University Professorship, University of San Diego (2015-16)

Herzog Endowed Scholar, University of San Diego (2012-13)

Winner, Stanford-Samsung Essay Contest on Patent Damages (2010)

PEER REVIEWING

Review of Law & Economics; Journal of Empirical Legal Studies; Artificial Intelligence & Law; Yale Law

Journal; Research Policy; Stanford Law Review; International Review of Law & Economics; Journal of

Ted Sichelman – March 2018 Page 25 of 25

Law, Technology & Policy; Oxford University Press; Cambridge University Press; Routledge; Banting

Postdoctoral Fellowship (Canada); Central European Institute of Legal Informatics (CEILI); Israel Science

Foundation; Austrian Science Fund (FWF).

EXTERNAL GRANTS, PROJECT FUNDING & HONORARIA

Project Lead, “Patent Litigation Database Project,” U.S. Patent & Trademark Office (2017-18).

Investigator, “Legal Scholarship Genome Project,” HeinOnline (with Yonathan Arbel) (2017).

Investigator, “Predicting Obviousness,” Antonin Scalia Law School – George Mason University, Center for

Protection of Intellectual Property (with Ryan Holte) (2015-17).

Honorarium, Edison Fellowship Senior Commentator, Antonin Scalia Law School – George Mason

University, Center for Protection of Intellectual Property (2016-17).

Honorarium, University of Texas School of Law Patent Damages Conference (2016).

Investigator, “A Comprehensive Patent Litigation Dataset for Empirical Research,” Ewing Marion

Kauffman Foundation (with Stuart Graham and Brian Wright) (2009).

Research Fellow, “Entrepreneurial Companies & the Patent System,” Ewing Marion Kauffman Foundation

(with Robert Barr, Stuart Graham, Robert Merges, and Pamela Samuelson) (2008-09).

TECHNOLOGY EXPERTISE

Telecommunications, software, and Internet technologies. Graduate study in classical mechanics,

electricity & magnetism, statistical mechanics, and quantum mechanics.